Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA405122
`ESTTA Tracking number:
`04/21/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Entity
`Address
`
`Zuffa, LLC
`limited liability company
`2960 W. Sahara Avenue
`Las Vegas, NV 89102
`UNITED STATES
`
`Citizenship
`
`Nevada
`
`Attorney
`information
`
`Michael N. Feder and Jennifer Ko Craft
`Gordong & Silver, Ltd.
`3960 Howard Hughes Parkway, 9th Floor
`Las Vegas, NV 89169
`UNITED STATES
`TRADEMARKS@GORDONSILVER.COM Phone:(702) 796-5555
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85146120
`04/21/2011
`
`Publication date
`Opposition
`Period Ends
`
`03/22/2011
`04/21/2011
`
`WATT Fuel Cell Corp.
`C/O 50 Maple Place
`Manhasset, NY 11030
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 009.
`All goods and services in the class are opposed, namely: Electrochemical devices, namely, fuel cells
`Class 042.
`All goods and services in the class are opposed, namely: Research, development, and design of fuel
`cell systems
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`2706754
`
`04/15/2003
`
`Word Mark
`
`UFC
`
`Application Date
`
`05/01/2002
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2001/05/00 First Use In Commerce: 2001/05/00
`Pre-recorded video cassettes, digital video discs, digital versatile discs, all
`featuring sports and entertainment; video game cartridges and discs; [ computer
`game cartridges and discs ]
`Class 016. First use: First Use: 2001/05/00 First Use In Commerce: 2001/05/00
`Posters; event and competition programs; photographs; (( postcards; trading
`cards; )) stickers
`Class 018. First use: First Use: 2001/05/00 First Use In Commerce: 2001/05/00
`All purpose sports bags; all purpose athletic carrying bags; back packs; book
`bags; duffel bags; gym bags; tote bags; knapsacks; luggage
`Class 025. First use: First Use: 2001/05/00 First Use In Commerce: 2001/05/00
`(( Warm-up suits, )) sweatshirts, tee-shirts; muscle shirts; sports shirts; tank
`tops; bathing suits; beach wear; (( jogging suits;)) shorts; shirts; gloves;
`underwear; jerseys; headwear; footwear, namely, bath thongs; hats; caps;
`workout and sports apparel, namely shorts and shirts
`Class 028. First use: First Use: 2001/05/00 First Use In Commerce: 2001/05/00
`Martial arts gloves; karate gloves; wrestling gloves; boxing gloves
`Class 041. First use: First Use: 2001/05/00 First Use In Commerce: 2001/05/00
`Entertainment services, namely, development, organization and production of
`competitions, performances and events featuring sports and entertainment;
`educational services, namely, providing information on the subject of sports and
`entertainment; providing a website on global computer networks featuring
`information on the subject of sports and entertainment; production of
`entertainment shows and interactive entertainment programs for distribution via
`television, cable, satellite, audio and video media cartridges, laser discs,
`computer discs and electronic means; production and distribution of
`entertainment shows and news programs via global communication networks
`
`U.S. Registration
`No.
`Registration Date
`
`3004864
`
`10/04/2005
`
`Word Mark
`
`UFC
`
`Application Date
`
`05/01/2002
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2004/08/24 First Use In Commerce: 2004/08/24
`pre-recorded compact discs featuring sports and entertainment
`Class 016. First use: First Use: 2004/11/00 First Use In Commerce: 2004/11/00
`books and printed instructional and teaching manuals in the field of sports and
`entertainment, appliques in the form of decals, decals and windshield decals
`strips; bumper stickers
`Class 024. First use: First Use: 2005/05/04 First Use In Commerce: 2005/05/04
`towels
`Class 025. First use: First Use: 2004/08/00 First Use In Commerce: 2004/08/00
`pants for babies, bandanas, wristbands, jerseys, headwear
`
`U.S. Registration
`No.
`Registration Date
`
`3929074
`
`03/08/2011
`
`Word Mark
`Design Mark
`
`UFC
`
`Application Date
`
`01/27/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the letters "UFC" in stylized form.
`
`Class 009. First use: First Use: 2009/10/20 First Use In Commerce: 2009/10/20
`Computer game programs
`
`U.S. Registration
`No.
`Registration Date
`
`3855626
`
`10/05/2010
`
`Word Mark
`
`UFC
`
`Application Date
`
`08/17/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the letters "UFC" in a stylized font design.
`
`Class 016. First use: First Use: 2009/07/11 First Use In Commerce: 2009/07/11
`magazines and printed periodicals featuring sports, fitness and entertainment in
`the nature of combative sports events and mixed martial arts
`
`U.S. Registration
`No.
`Registration Date
`
`3647556
`
`06/30/2009
`
`Word Mark
`Design Mark
`
`UFC
`
`Application Date
`
`02/18/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of "UFC" (Stylized).
`
`Class 006. First use: First Use: 2006/08/00 First Use In Commerce: 2006/08/00
`Metal key chains
`Class 014. First use: First Use: 2007/12/00 First Use In Commerce: 2007/12/00
`Watches and clocks; jewelry; championship trophy belt made of gold plated
`metal
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`
`3052007
`
`Application Date
`
`05/01/2002
`
`01/31/2006
`
`Foreign Priority
`Date
`UFC ULTIMATE FIGHTING CHAMPIONSHIP
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2001/05/00 First Use In Commerce: 2001/05/00
`Entertainment, namely live stage shows and performances featuring mixed
`martial arts; educational services, namely, providing information on the subject
`of sports and entertainment; providing a website on global computer networks
`featuring information on the subject of sports and entertainment; production of
`entertainment shows and interactive entertainment programs for distribution via
`television, cable, satellite, audio and video media cartridges, laser discs,
`computer discs and electronic means; production and distribution of
`entertainment shows and news programs via global communication networks
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`2981638
`
`Application Date
`
`09/30/2002
`
`08/02/2005
`
`Foreign Priority
`Date
`UFC ULTIMATE FIGHTING CHAMPIONSHIP
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`
`NONE
`
`Class 025. First use: First Use: 2001/09/00 First Use In Commerce: 2001/09/00
`gloves
`
`3044208
`
`Application Date
`
`05/01/2002
`
`01/17/2006
`
`Foreign Priority
`Date
`UFC ULTIMATE FIGHTING CHAMPIONSHIP
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 028. First use: First Use: 2001/05/00 First Use In Commerce: 2001/05/00
`Martial arts gloves; karate gloves; wrestling gloves; boxing gloves
`
`U.S. Registration
`No.
`Registration Date
`
`3650069
`
`07/07/2009
`
`Word Mark
`Design Mark
`
`UFC FIGHT NIGHT LIVE
`
`Application Date
`
`09/29/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2008/07/19 First Use In Commerce: 2008/07/19
`Entertainment services, namely, arranging and conducting mixed martial arts
`competitions and events; providing information regarding mixed martial arts;
`production of programs featuring mixed martial arts competitions and events for
`distribution over television, cable, satellite, audio and global computer networks
`
`U.S. Registration
`No.
`Registration Date
`
`3890367
`
`12/14/2010
`
`Word Mark
`
`UFC FAN EXPO
`
`Application Date
`
`07/20/2010
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the stylized text "UFC" with the text "FAN" over the text
`"EXPO" to the right of it.
`Class 035. First use: First Use: 2009/07/10 First Use In Commerce: 2009/07/10
`Organization of special events, exhibitions, trade shows and conventions for
`commercial, promotional or advertising purposes; arranging and conducting
`special events, exhibitions, trade shows and conventions for commercial,
`promotional or advertising purposes; and advertising, marketing and promotion
`services
`
`U.S. Registration
`No.
`Registration Date
`
`3890368
`
`12/14/2010
`
`Word Mark
`Design Mark
`
`UFC FAN EXPO
`
`Application Date
`
`07/20/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the stylized text "UFC" with the text "FAN" over the text
`"EXPO" to the right of it.
`Class 041. First use: First Use: 2009/07/10 First Use In Commerce: 2009/07/10
`Arranging, organizing, conducting, and hosting entertainment events for mixed
`martial arts and sports fans; arranging, organizing, conducting and hosting
`mixed martial arts exhibitions; entertainment services, namely, personal
`appearances by mixed martial arts fighters, athletes, models and celebrities;
`education and training services in the nature of physical fitness, sports and
`mixed martial arts; arranging, organizing, conducting and hosting classes,
`seminars, conferences, workshops on physical fitness, sports and mixed martial
`arts; and providing an online newsletter in the fields of sports and mixed martial
`arts; providing a website featuring information about sports and mixed martial
`arts
`
`U.S. Registration
`No.
`Registration Date
`
`3931158
`
`03/15/2011
`
`Word Mark
`
`UFC UNDISPUTED
`
`Application Date
`
`08/16/2010
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the phrase "UFC UNDISPUTED" in a stylized font design.
`
`Class 009. First use: First Use: 2009/05/19 First Use In Commerce: 2009/05/19
`video game software and computer game software and related instruction
`manual sold together as a unit; interactive video game programs; video game
`cartridges; video game discs; downloadable computer game software; video
`game controllers; interactive video game comprised of a cartridge or DVD sold
`as a unit with a video game controller
`
`Related
`Proceedings
`
`Attachments
`
`Notice of opposition filed against application no. 85/145984.
`
`76402815#TMSN.gif ( 1 page )( bytes )
`76977681#TMSN.gif ( 1 page )( bytes )
`77657725#TMSN.jpeg ( 1 page )( bytes )
`77806317#TMSN.jpeg ( 1 page )( bytes )
`77673283#TMSN.jpeg ( 1 page )( bytes )
`76402817#TMSN.gif ( 1 page )( bytes )
`76977283#TMSN.gif ( 1 page )( bytes )
`76977324#TMSN.gif ( 1 page )( bytes )
`77581257#TMSN.jpeg ( 1 page )( bytes )
`85088784#TMSN.jpeg ( 1 page )( bytes )
`85088789#TMSN.jpeg ( 1 page )( bytes )
`85108620#TMSN.jpeg ( 1 page )( bytes )
`Notice of Opposition to WFC _Stylized_ in Class 9 _2_.pdf ( 8 pages )(43961
`bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`Name
`Date
`
`/Jennifer Ko Craft/
`Jennifer Ko Craft
`04/21/2011
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`Mark WFC (Stylized)
`
`Serial No. 85146120
`
`Published March 22, 2011
`
`
`
`Opposer,
`
`v.
`
`
`
`Applicant.
`
`
`
`Zuffa, LLC, a Nevada limited liability
`company,
`
`
`
`
`
`
`
`
`
`
`
`WATT Fuel Cell Corp.,
`
`NOTICE OF OPPOSITION
`
`Pursuant to 15 U.S.C. § 1063 and 37 C.F.R. § 2.101, Opposer Zuffa, LLC (“Zuffa”), a
`
`Nevada limited liability company with its principal place of business at 2960 W. Sahara Avenue,
`
`Las Vegas, Nevada 89102, hereby opposes the application filed by Applicant WATT Fuel Cell
`
`Corp ("Applicant") to register the mark
`
`in International Classes 9 & 42 (Serial No.
`
`85/146120), published on March 22, 2011.
`
`As grounds for its opposition, Zuffa alleges as follows:
`
`1. Zuffa owns the
`
`mark and is one of the world’s leading promoters of mixed
`
`martial arts ("MMA") competitions and events.
`
`2. Zuffa offers a wide variety of goods and services under Zuffa's
`
`and other
`
`formative marks (collectively, the "
`
`Formative Marks"), including sports and
`
`entertainment services (such as MMA competitions, events, promotions and television
`
`programs), CDs, DVDs, computer programs and other pre-recorded media featuring sports and
`
`102800-005/1190380
`
`

`
`entertainment content, video game cartridges and discs, video and computer game software;
`
`publications and printed materials, apparel and apparel accessories, souvenir items, sports,
`
`exercise and fitness equipment and accessories, energy drinks, nutritional supplements and
`
`drinks, vitamins and credit cards.
`
`3. Zuffa owns numerous federal trademark registrations for the
`
`Formative
`
`Marks, including the following in Classes 6, 9, 14, 16, 18, 24, 25, 28 and 41:
`
`(a)
`
`for "Pre-recorded video cassettes, digital video discs, digital
`
`versatile discs, all featuring sports and entertainment; video game cartridges
`
`and discs" in International Class 9; "All purpose sports bags; all purpose
`
`athletic carrying bags; back packs; book bags; duffel bags; gym bags; tote
`
`bags; knapsacks; luggage" in Class 18; "sweatshirts, tee-shirts; muscle shirts;
`
`sports shirts; tank tops; bathing suits; beach wear; shorts; shirts; gloves;
`
`underwear; jerseys; headwear; footwear, namely, bath thongs; hats; caps;
`
`workout and sports apparel, namely shorts and shirts" in International Class
`
`25; "Martial arts gloves; karate gloves; wrestling gloves; boxing gloves" in
`
`International Class 28; and "Entertainment services, namely, development,
`
`organization and production of competitions, performances and events
`
`featuring sports and entertainment; educational services, namely, providing
`
`information on the subject of sports and entertainment; providing a website on
`
`global computer networks featuring information on the subject of sports and
`
`entertainment; production of
`
`entertainment
`
`shows
`
`and
`
`interactive
`
`entertainment programs for distribution via television, cable, satellite, audio
`
`102800-005/1190380
`
`

`
`and video media cartridges, laser discs, computer discs and electronic means;
`
`production and distribution of entertainment shows and news programs via
`
`global communication networks" in International Class 41 (U.S. Reg. No.
`
`2706754);
`
`(b)
`
`for "pre-recorded compact discs featuring sports and entertainment"
`
`in International Class 9; "books and printed instructional and teaching
`
`manuals in the field of sports and entertainment, appliques in the form of
`
`decals, decals and windshield decals strips; bumper stickers" in International
`
`Class 16; "towels" in International Class 24; and "pants for babies, bandanas,
`
`wristbands, jerseys, headwear" in International Class 25 (U.S. Reg. No.
`
`3004864);
`
`(c)
`
`for "Computer game programs" in International Class 9 (U.S. Reg.
`
`No. 392074);
`
`(d)
`
`for "Magazines and printed periodicals featuring sports, fitness and
`
`entertainment in the nature of combative sports events and mixed martial arts"
`
`in International Class 16 (U.S. Reg. No. 3855626);
`
`(e)
`
`for "Metal key chains" in International Class 6; and "Watches and
`
`clocks; jewelry; championship trophy belt made of gold plated metal" in
`
`International Class 14 (U.S. Reg. No. 3647556);
`
`102800-005/1190380
`
`

`
`(f)
`
`for "Entertainment, namely live stage shows and performances
`
`featuring mixed martial arts; educational services, namely, providing
`
`information on the subject of sports and entertainment; providing a website on
`
`global computer networks featuring information on the subject of sports and
`
`entertainment; production of
`
`entertainment
`
`shows
`
`and
`
`interactive
`
`entertainment programs for distribution via television, cable, satellite, audio
`
`and video media cartridges, laser discs, computer discs and electronic means;
`
`production and distribution of entertainment shows and news programs via
`
`global communication networks" in International Class 41 (U.S. Reg. No.
`
`3052007);
`
`(g)
`
`(h)
`
`for "Gloves" in International Class 25 (U.S. Reg. No. 2981638);
`
`for "Martial arts gloves; karate gloves; wrestling gloves; and
`
`boxing gloves" in International Class 28 (U.S. Reg. No. 3044208);
`
`(i)
`
` for "Entertainment services, namely, arranging and conducting
`
`mixed martial arts competitions and events; providing information regarding
`
`mixed martial arts; production of programs featuring mixed martial arts
`
`competitions and events for distribution over television, cable, satellite, audio
`
`and global computer networks" in International Class 41 (U.S. Reg. No.
`
`3650069);
`
`102800-005/1190380
`
`

`
`(j)
`
` for "Organization of special events, exhibitions, trade shows and
`
`conventions for commercial, promotional or advertising purposes; arranging
`
`and conducting special events, exhibitions, trade shows and conventions for
`
`commercial, promotional or advertising purposes; and advertising, marketing
`
`and promotion services" in International Class 35 (U.S. Reg. No. 3890367);
`
`(k)
`
`
`
`for
`
`"Arranging, organizing,
`
`conducting,
`
`and hosting
`
`entertainment events for mixed martial arts and sports fans; arranging,
`
`organizing, conducting and hosting mixed martial arts exhibitions;
`
`entertainment services, namely, personal appearances by mixed martial arts
`
`fighters, athletes, models and celebrities; education and training services in the
`
`nature of physical fitness, sports and mixed martial arts; arranging,
`
`organizing, conducting and hosting classes, seminars, conferences, workshops
`
`on physical fitness, sports and mixed martial arts; and providing an online
`
`newsletter in the fields of sports and mixed martial arts; providing a website
`
`featuring information about sports and mixed martial arts" in International
`
`Class 41 (U.S. Reg. No. 3890368); and
`
`(l)
`
`for "video game software and computer game software and related
`
`instruction manual sold together as a unit; interactive video game programs;
`
`video game cartridges; video game discs; downloadable computer game
`
`software; video game controllers; interactive video game comprised of a
`
`cartridge or DVD sold as a unit with a video game controller" in International
`
`Class 9 (U.S. Reg. No. 3931158).
`
`102800-005/1190380
`
`

`
`
`
`4. Zuffa’s above-referenced federal trademark registration for
`
`corresponding
`
`to U.S. Reg. No. 2706754 is incontestable.
`
`5. Zuffa has made substantial and continuous use of the
`
` Formative Marks for
`
`several years and has expended considerable resources in the protection, enforcement,
`
`advertising and marketing of such marks.
`
`6. By virtue of this continuous and extensive use of the
`
`Formative Marks,
`
`such marks, including, without limitation, the stylization and font used in connection with the
`
`Formative Marks, have become invested with substantial goodwill and worldwide
`
`recognition and fame.
`
`7. Applicant is seeking registration of
`
`for "Electrochemical devices, namely,
`
`fuel cells" in International Class 9 and "Research, development, and design of fuel cell systems"
`
`in International Class 42.
`
`8. Applicant’s registration of the
`
`mark is likely to cause confusion, to cause
`
`mistake or to deceive consumers. Applicant’s
`
`mark is confusingly similar to Zuffa’s
`
` Formative Marks. Not only are the literal elements of Applicant's trademark (namely,
`
`WFC) nearly identical to Zuffa's
`
` Formative Marks, the font and stylization the
`
`102800-005/1190380
`
`

`
`Applicant chose to use for the literal elements (namely, letters "F" and "C" in the
`
`mark) are nearly identical to the distinctive font and stylization used in Zuffa's
`
` Formative Marks.
`
`9. Zuffa’s
`
`Formative Marks were famous before Applicant filed
`
`its
`
`application for
`
` on October 6, 2010, as shown in Application Serial No: 85/146120.
`
`10. Applicant’s registration of the
`
` mark is likely to dilute the distinctiveness
`
`of Zuffa’s
`
`Formative Marks.
`
`11. Zuffa will suffer damage including irreparable injury to its reputation and goodwill if
`
`Applicant is permitted to register the
`
`mark.
`
`WHEREFORE, Zuffa prays that the opposition be sustained and that the Board refuse
`
`Applicant’s application to register the
`
`mark.
`
`
`
`Dated: April 21, 2011
`
`
`
`102800-005/1190380
`
`Respectfully submitted,
`
`GORDON SILVER
`
`/Jennifer K. Craft/_________________________
`Michael N. Feder, Esq.
`Jennifer K. Craft, Esq.
`3960 Howard Hughes Parkway, Ninth Floor
`Las Vegas, Nevada 89169
`jcraft@gordonsilver.com
`(702) 796-5555 (phone)
`(702) 369-2666 (fax)
`
`

`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that, on this 21ST day of April, 2011, a true and complete copy of the
`
`foregoing Notice of Opposition has been served by United States mail, first class postage
`
`prepaid, on the following counsel of record for Applicant:
`
`Josephine Marrali
`Resiman, Peirez & Reisman
`1305 Franklin Avenue PO Box 119
`Garden City, NY 11530-7902
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`_/Katie Sitto/________________
`An employee of Gordon Silver Ltd.
`
`
`
`
`
`
`
`102800-005/1190380